The Spanish transposition of Directive (EU) 2015/2436 to harmonise the laws on trademarks across the EU

Written on 30 Jan 2019

Act 17/2001, of 7 December, on trademarks, would already have included a great deal of the provisions included in Directive (EU) 2015/2436, provisions in relation to trademark ownership right, collective trademarks and certain procedural rules. However, as the new Directive intends to enhance the limited harmonisation among national laws achieved by the previous one –Directive 2008/95/EC– in relation to the trademark registration and management, certain modifications to the Spanish national law were necessary.

As of 14 of January of 2019 the term for Member States to transpose Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to implement it into the laws of the Member States relating to trademarks would have elapsed. To comply with the established term, the Spanish Government enacted the Royal Legislative Decree 23/2018, of 21 of December, on the implementation of the trademarks, rail transport and packaged tours and related travel services directives (“Implementing Law”).

Although three different EU Directives are implemented by means of the Implementing Law, this newsletter would only address the provisions provided by Title I of the Royal Decree, which would modify Act 17/2001, of 7 December, on trademarks (Spanish Trademarks Act or STA) with regard to the aforementioned EU Directive on trademarks.

The first notable modification introduced by the implementing law that should be noted is the new delimitation of the intangible good subject to registration. The previous text required a trademark application for registration to be susceptible to graphic representation, while the new text would only require the same to be “susceptible to having a representation within the Register of Trademarks”. This legislative change, without a single mention to the means to be used for said representation, regards the available technology at the time of a trademark representation as viable if it permits to have a representation that is accurate, clear, self-sufficient, easily-accessible, understandable, long-lasting and objective. Additionally, when it comes to the renewal of a trademark registration, a legal presumption of renewal application in case of payment of the renewal’s application administrative fees has been added to ease the administrative burden for fight holders in this respect.

Furthermore, the new text strengthens the absolute registration prohibitions in relation to designations of origin, wine traditional terms, guaranteed traditional specialities and designations of plant varieties. Nonetheless, the protection in Spain to well-known trademarks would substantially change under the new regime. In particular, the distinction between a well-known and a renowned trademark may have been confusing in the past. Therefore, through the effective implementation of the Directive, there would only be one envisaged category for such protection: the well-known trademark in Spain or in the EU, depending on whether the trademark is registered with the Spanish Patent and Trademark Office or with the EUIPO.

Also worth mentioning is the modification to the Spanish Trademarks Act which relates to the opposition procedure. In order to prevent any opposition for the sole purpose of hindering the use of a trademark, the objector will be required to prove the use of the previous registries on which said application would base the opposition. In addition, the Implementing Law directly empowers the OEPM to decide on the cases of a trademark expiration and nullity, as well as the courts to hear about expiration or nullity counterclaims within trademark violation proceedings. Consequently, the Implementing Law regulates the legal standing conditions and the guidelines in relation to the expiration and nullity administrative procedures, yet further regulatory provisions for such procedure are envisaged.

In relation to what is mentioned above, as the competence to declare the expiration and nullity of a trademark is shared between the Spanish Patent and Trademark Office and the Courts, the effects of res judicata and the time when certain resolutions become final are also specifically regulated. Moreover, the Implementing Law establishes that the effects of expiration and nullity will go back to the moment of the administrative expiration claim or counterclaim. Nevertheless, it should be noted that despite the fact that the Implementing Law would enter into force on the 14 of January of 2019, the allocation of such competences to the OEPM to declare a trademark expiration or nullity will be delayed by four years.

Additionally, it should be noted how the Implementing Law changes the way to exercise an action for a trademark infringement. Apart from new possible actions to prevent preparatory events to a trademark infringement –i.e. against counterfeiting in customs transit–, the active legitimation of the holder of an exclusive license to bring proceedings for infringement of a trademark is specifically regulated, provided that the owner consents thereto. Nonetheless, if an exclusive licensee gives a formal notice to the owner, and the latter does not bring infringement proceedings himself, the first may be entitled to bring such proceedings without the mentioned owner’s consent.

Overall, the approval of the Implementing Law would answer to the objective of the aforementioned EU directive, which is to approximate the –materially and foremost procedurally– laws of Member States relating to trademarks. As already mentioned, this regulation will already have entered into force by the time that this newsletter is published. However, certain relevant provisions of the same will be delayed by four years. As a consequence, we would have to wait to observe the full effects from the provisions of the legal modifications in relation to trademark protection.